What is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more: